DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 12/03/2025 is acknowledged. The traversal is on the ground(s) that the MPEP permits restriction only between independent or distinct inventions, Response pg 1-2, 3rd paragraph. This is not found persuasive.
There are two standards for restriction, See MPEP 1896 The differences between a National Application filed Under 35 USC 111(a) and a National Stage Application Submitted Under 35 USC 371. For applications filed under 35 USC 111(a), US restriction practice is under 37 CFR 1.141-1.146, which has the independent or distinct standard cited by Applicant Representative. For a National Stage Application Submitted Under 35 USC 371 restriction practice is under Unity of Invention practice.
Reviewing the Applicant’s ADS, the Application should be examined under the Unity of Invention, rather than a requirement of “independent or distinct” as suggested by Applicant Representative, because its continuity type is a 371 of international PCT/GB2021/052522, see selected image taken from the ADS dated 05/12/2023 from the Application file wrapper.
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See also MPEP 1893.03(a) How to Identify Than an Application is a US National Stage Application, paragraph 2, where Applicant’s seeking to enter the national stage are advised to use transmittal Form PTO-1390. This application submission did contain such a form, reproduced in part below:
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Applicant argument was based on the Examiner applying the incorrect standard for restriction. This argument is not persuasive. The requirement is still deemed proper and is therefore made FINAL.
Applicant is reminded of their right to petition the Director to review the restriction requirement, as to any issue where reconsideration of the requirement was requested, here limited to the standard applied for making the restriction, See 37 CFR 1.144 Petition from requirement for restriction.
Claims 6, 9, 17-21, 23, and 27-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention and Species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/03/2025.
Status of Claims
Claims 1, 5-6, 9-10, 13-14, 16-21, 23, 25, 27-31 are pending. Claims 6, 9, 17-21, 23, and 27-31 are withdrawn. Claims 2-4, 7-8, 11-12, 15, 22, 24, and 26 are cancelled. Claims 1, 5, 10, 13-14, and 16 are ready for examination.
Response to Arguments
Applicant's arguments filed 12/03/2025 have been fully considered but they are not persuasive.
At the outset, Examiner thanks Applicant Representative for the invitation to call and discuss the present Restriction Requirement. Prosecution with the United States Patent and Trademark Office is a collaborative process between the Applicant and/or their Representative and the USPTO Examiner assigned to their Application. Discussion between the two facilitates compact prosecution and helps arrive at a quality decision regarding the merits of the invention and whether there is any allowable subject matter that might issue from the Application.
The Applicant Representative indicated that they were confused by the Restriction Requirement, and questioned the propriety of the restriction calling it “confusing and erroneous.” Examiner called Applicant Representative in an effort to clarify the Restriction Requirements and ensure that Applicant understood the consequences of the Group and especially Species election made in their Response. A message was left, and an opportunity was given to call Examiner back to discuss and confirm Applicant elections, as well as discuss the Species election requirement.
A month has passed, Applicant Representative has not called Examiner back.
Applicant has claimed two Species:
Species A – the cap comprising a sealing element to seal an outlet of the delivery system.
Species B – the cap does not comprise a sealing element to seal an outlet of the delivery system.
Generally, a Species election requirement does not identify the claims that read on each species. Rather, Applicant provides their understanding of what claims read on each species, and then Examiner either agrees or disagrees in the next action. This promotes compact prosecution, and a collaborative discussion that helps progress applications towards allowance.
Species A is considered by Examiner to be a cap, where the outlet of the delivery system is not in fluid communication with the apertures such that flow from an outlet in the mouthpiece is not permitted through the device.
Consider the following figures from the Application, Fig 6, 8, and 12, reproduced below, that relate to Species A:
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Each of these figures depict embodiments where the flow of aerosol from the device through the cap would be impeded either by a seal, ref 24, or walls that restrict the flow of aerosol from the mouthpiece
through the cap and out the apertures, all of which are considered sealing elements.
Consider Fig 3, reproduced below that relates to Species B:
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Ref 6, represents a vaporizer device comprising a mouthpiece inserted into the cap. The vaporizer device is understood as comprising an outlet, proximate to ref 5. A person, drawing on the cap depicted above could reasonably be expected to draw air around the mouthpiece through the inlets ref 28 and out through apertures ref 7, but would also be expected to draw aerosol generated from the device through the cap as well. This is a cap where the outlet from the aerosol generating device is left open. This cap ventilates an aerosol flow from a device.
The two different caps meet the requirements for different species under the Unity of Invention analysis, as discussed in the restriction requirement of 10/09/2025. Applicant had the opportunity to call Examiner to discuss the election requirement, and the species election. Examiner would have welcomed this conversation, and permitted a different election at that point based on a better understanding of the species present in the claims. Applicant did not return Examiner’s call.
Applicant elected to pursue Species B, which are found to read on claims 1, 5, 10, 13-14, and 16.
Claim Objections
Claims 5, 10, 13-14, and 16 are objected to because of the following informalities: These claims all recite: “A cap according to claim …”. Because “A cap” introduced in claim 1, these claims 5, 10, 13-14, and 16 should all recite “The cap”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation of an air permeable filter element through which (located such that) air must pass when passing through the apertures, and the claim also recites “optionally wherein the filter element is provided within the apertures” which is the narrower statement of the location requirement of the limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Consistent with the broadest reasonable interpretation of the claim language, the claim limitation will be met if either condition is met.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, and 13-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wensley et al. (US 2015/0196060 A1).
Regarding claim 1, Wensley discloses:
A cap, ([0007] adapter), for use with a delivery system, ([0007] disclosing an aerosol generating device for use with the adapter), the cap comprising an outer wall defining an internal cavity, ([0007] the adapter comprises a hollow main body), with an entrance opening at a first end of the cap, the internal cavity configured to receive a mouthpiece of the delivery system, wherein the cap outer wall includes at least one aperture disposed at a second end of the cap which is opposite to the first end and arranged to allow airflow through the internal cavity, around the mouthpiece and out of the cap via the at least one aperture when the cap is fitted to a delivery system, ([0007] the adapter has opposing first and second open ends, with one open end configured to couple to and surround the outlet of the air flow channel (of the aerosol delivery system) and the other end comprising an outlet (anticipating an aperture), see Fig 1A and 1B reproduced below).
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Regarding claim 13-14, Wensley discloses:
A cap according to claim 1, wherein an airflow passage is defined through the internal cavity between the aperture(s) and the entrance opening, further comprising at least one air inlet disposed in the outer wall, wherein the airflow passage is defined between the air inlet(s) and the aperture(s), (Fig 1A and 1B, depicting an airflow passage defined between the aperture and the entrance opening, with at least one air inlet (the secondary inlets) disposed in the outer wall).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wensley et al. (US 2015/0196060 A1) as applied to claims 1 and 14 above, and further in view of Macko (US 2017/0150753 A1).
Regarding claim 5 and 16, Wensley discloses:
A cap according to claim 1, wherein the outer wall comprises a sidewall extending from an air outlet to the entrance opening, wherein the or each air inlet is provided in the side wall, (see Fig 1A and 1B).
Wensley does not explicitly disclose the outer wall comprises an end wall, wherein the end wall comprises the at least one aperture.
Macko teaches electronic vapor devices, ([0001]), and thus is within the inventor’s field of endeavor. Macko teaches the size, shape, and position of each outlet on a mouthpiece may be varied based on the desired propertied of an exiting vapor, ([0038]). Macko teaches that the number, angle, and size of the outlets can be varied as needed to obtain a desired resistance to draw (RTD) of the e-vapor device, ([0039]).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have modified the adapter of Wensley according to the teachings of Macko.
In particular, one of ordinary skill in the art, contemplating the invention of Wensley and the teachings of Macko, would have found it obvious to provide an end wall across the outlet of Wensley and provide apertures of an appropriate shape, number, and size to obtain a desired resistance to draw through the modified adapter of Wensley. This is considered to be the application of a known technique to a known device ready for improvement to yield predictable results, MPEP 2143 I. Examples of Rationales (D).
Here the prior art of Wensley contained the base device. The prior art of Macko contained the known technique of restricting the outlet with a particular size, shape, position, and number of outlets to provide a desired resistance to draw. It is found that one of ordinary skill in the art would have recognized that applying the know techniques to the known device would yield predictable results and an improved system, by adjusting the system to have a more desirable resistance to draw. See MPEP 2143 I. D. Applying a Known Technique to a Known Device (Method, or Product) Ready for Improvement to Yield Predictable Results, (1)-(3).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wensley et al. (US 2015/0196060 A1) as applied to claim1 above, and further in view of Jeong et al. (US 2022/0175015 A1).
Regarding claim 10, Wensley discloses a cap according to claim 10. Wensley discloses a liquid formulation and a heater element, wherein the heater element is located in the aerosol generation region, and wherein the liquid formulation is in fluid communication with the heater element, ([0007]). Wensley does not disclose the adapter comprises an air permeable filter element which air must pass through when passing through the aperture(s) or that the filter element is provided within the aperture(s).
Jeong teaches an aerosol generating device and system, ([0001]), and is thus within the inventor’s field of endeavor. Jeong further teaches that the filter may contain a flavoring component to increase a user’s satisfaction, which may include a variety of flavors, ([0080]). Jeong further teaches that the filter may be configured to function, where aerosol is allowed to pass therethrough but blocks the inflow of liquid, ([0080]).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to modify the adapter of Wensley according to the teachings of Jeong. In particular, one of ordinary skill in the art would have found it obvious to modify the base device of Wensley with a flavored filter element located in the opening of Wensley, such that air and aerosol drawn through the opening of Wensley must pass through the flavored filter, for the advantage of flavoring the airflow through the filter and also preventing liquid that may not be aerosolized from inhalation by a user. This is considered to be combining prior art elements according to known methods to yield predictable results, MPEP 2143 I. Examples of Rationales (A).
Here the prior art of Wensley comprises all the elements of the claimed device, with the exception of the air permeable filter element arranged such that air must pass through it or that the filter element is provided within the aperture(s). The prior art of Jeong teaches a flavored air and aerosol permeable, liquid impermeable filter element, which is used to flavor the aerosol and air flowing through the filter element. One of ordinary skill in the art could have combined these elements by known methods, such as sizing the filter element of Jeong to snugly fit within the opening of Wensley, such that the in the combination each element merely performs the same function as it does separately, the mouthpiece of Wensely providing ventilation for the aerosol generated by the device, the filter of Jeong flavoring the aerosol and air flowing through the filter. One of ordinary skill in the art would have recognized the results of the combination were predictable. One of ordinary skill in the art would have been motivated to provide the combination both to provide added flavor, and resulting user satisfaction from desired flavors, as well as preventing liquid inhalation through the adapter. See MPEP 2143 I. A. Combining Prior Art Elements According to Known Methods to Yield Predictable Results, (1)-(4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747